DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA . Claims 1, 41-42, and 61-68 are pending.
Note to Applicant
Applicant is directed to the Subject Matter Eligibility guidance on the PTO website, which explains how patent examiners evaluate claims for patent subject matter eligibility under 35 U.S.C. 101.
Link: https://www.uspto.gov/patents/laws/examination-policy/subject-matter-eligibility.
Claim Objections
Claims 41-42, 62-66, and 68 are objected to because of the following informalities.
Each of the claims recites “A method…” in the preamble. Given that these claims are dependent claims, the preamble should recite: “The method…”
Appropriate correction is required.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 1, 41-42, and 61-68 are rejected under 35 U.S.C. 101 because the claimed invention is directed to a judicial exception without significantly more.
Step 1 (The Statutory Categories): Is the claim to a process, machine, manufacture or composition of matter? MPEP 2106.03
Per Step 1, claims 1, 61, and 67 are directed to a method, i.e., a process, which is a statutory category of invention per Step 1. However, the claims are rejected under 35 U.S.C. 101 because they are directed to an abstract idea, a judicial exception, without reciting additional elements that integrate the judicial exception into a practical application or are significantly more.
The analysis continues to Step 2A Prong 1.
Step 2A Prong 1: Does the claim recite an abstract idea, law of nature, or natural phenomenon? MPEP 2106.04.
The abstract idea of claim 1 is:
monitoring how many projects the crowdfunding work provider provides crowdfunding work for, to attempt to get such projects crowdfunded, where:
each project has a project creator, the project creator using the crowdfunding work provider to try to crowdfund the project of the project creator via a crowdfunding campaign, and where the crowdfunding work provider is a party that is skilled in the art of getting projects crowdfunded, the crowdfunding work provider not being a crowdfunding platform, but instead being a party that is skilled in the art of using a crowdfunding platform to get projects crowdfunded; and
the crowdfunding campaign has a target funding amount, and funders are able to fund the crowdfunding campaign, to help the crowdfunding campaign reach the target funding amount, and thus help the project reach the target funding amount; and
monitoring the success rate the crowdfunding work provider has of successfully getting projects crowdfunded by reaching the target funding amount, out of the how many projects the crowdfunding work provider has attempted to get crowdfunded.
The abstract idea of claim 61 is:
monitoring how many projects the prototyping work provider provides prototyping work for, where:
each project has a project creator, the project creator using the prototyping work provider to carry out prototyping work for the project of the project creator, and where the prototyping work provider is a party that is skilled in the art of prototyping products and explicitly carries out prototyping work for the project of the project creator; and
each project has a target money amount for the project to generate, with funding not included in achieving generating the target money amount, and where the target money amount is an amount of money that is equal to what the project creator pays the prototyping work provider, or is an amount of money that is more than what the project creator pays the prototyping work provider; and
monitoring the success rate the prototyping work provider has of projects successfully generating the target money amount, out of the how many projects the prototyping work provider has provided prototyping work for;
wherein the method further comprises:
the prototyping work provider bidding to provide work that includes prototyping work for the project of the project creator; and
the bid of the prototyping work provider and the success rate of the prototyping work provider being relayed to the project creator,
wherein the method further comprises:
the prototyping work provider choosing the project as a project that does not count negatively against the success rate of the prototyping work provider if the project does not successfully generate the target money amount
The abstract idea of claim 67 is:
monitoring how many projects the prototyping work provider provides prototyping work for, where:
each project has a project creator, the project creator using the prototyping work provider to carry out prototyping work for the project of the project creator, and where the prototyping work provider is a party that is skilled in the art of prototyping products and explicitly carries out prototyping work for the project of the project creator; and
each project has a target money amount for the project to generate, with funding not included in achieving generating the target money amount, and where the target money amount is an amount of money that is equal to what the project creator pays the prototyping work provider, or is an amount of money that is more than what the project creator pays the prototyping work provider; and
monitoring the success rate the prototyping work provider has of projects successfully generating the target money amount, out of the how many projects the prototyping work provider has provided prototyping work for;
wherein, for each project the prototyping work provider provides prototyping work for, how much financial profit each project generates is monitored.
The limitations, as drafted, constitute a process that, under its broadest reasonable interpretation, covers commercial activity, since the claimed invention is directed to the business relationship between a project creator and crowdfunding/prototyping work provider. This is supported by page 1 of applicant’s specification (“The present invention relates to a method/system of helping inventor(s) progress with their invention (and hopefully get it to market, and more hopefully to gain (financial) success with it), and may also be seen and/or defined as a business method.”). If a claim limitation, under its broadest reasonable interpretation, covers commercial interactions, including business relations, then it falls within the Certain Methods of Organizing Human Activity – Commercial or Legal Interactions grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Additionally and alternatively, the limitations, as drafted, constitute a process that, under its broadest reasonable interpretation, covers managing interactions between people, since the claimed invention is directed to the steps for monitoring the success rate of a crowdfunding/prototyping work provider. If a claim limitation, under its broadest reasonable interpretation, covers following rules or instructions for an objective, then it falls within the Certain Methods of Organizing Human Activity – Managing Personal Behavior Relationships, Interactions Between People grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Additionally and alternatively, the limitations, as drafted, constitute a process that, under its broadest reasonable interpretation, covers performance of the limitations in the mind. Applicant has broadly described monitoring the success rate the crowdfunding work provider has of successfully getting projects crowdfunded by reaching the target funding amount, out of the how many projects the crowdfunding work provider has attempted to get crowdfunded and/or monitoring the success rate the prototyping work provider has of projects successfully generating the target money amount, out of the how many projects the prototyping work provider has provided prototyping work for, i.e. evaluations. If a claim limitation, under its broadest reasonable interpretation, covers performance of the limitation in the mind, including observations, evaluations, judgements, and/or opinions, then it falls within the Mental Processes – Concepts Performed in the Human Mind grouping of abstract ideas. Accordingly, the claim recites an abstract idea.
Step 2A Prong 2: Does the claim recite additional elements that integrate the judicial exception into a practical application? MPEP 2106.04.
The abstract idea is not integrated into a practical application. The additional elements (claim 1: a “crowdfunding platform where funders can fund the project via the crowdfunding campaign,” “via a crowdfunding platform”; claim 61: “via a computer implemented interface,” “electronically”) are nothing more than the mere recitation of generic computing elements used for the tasks of the abstract idea. (Examiner notes that there are no additional elements in claim 67.)
Applying generic computing elements to the abstract idea does not integrate the abstract idea into practical application, per MPEP 2106.05(f). (Further references to “crowdfunding platform,” i.e. “the crowdfunding work provider not being a crowdfunding platform, but instead being a party that is skilled in the art of using a crowdfunding platform to get projects crowdfunded,” are used to describe the “crowdfunding work provider” and are considered part of the abstract idea.) Accordingly, the additional elements do not integrate the abstract idea into a practical application, when viewed alone or in combination.
Therefore, per Step 2A Prong 2, the claim is directed to an abstract idea.
Step 2B (The Inventive Concept): Does the claim recite additional elements that amount to significantly more than the judicial exception? MPEP 2106.05.
Step 2B involves examiner carrying over their identification of the additional elements in the claim from Step 2A Prong Two, in addition to conclusions from Step 2A Prong Two concerning MPEP 2106.05(f). Thus, examiner carries over the conclusion from above: the additional elements of claims 1 and 61 are nothing more than the mere recitation of generic computing elements used for the tasks of the abstract idea. (Examiner notes that there are no additional elements in claim 67.)
Applying generic computing elements to the abstract idea is not significantly more, per MPEP 2106.05(f). (Additional references to “crowdfunding platform,” i.e. “the crowdfunding work provider not being a crowdfunding platform, but instead being a party that is skilled in the art of using a crowdfunding platform to get projects crowdfunded,” are used to describe the “crowdfunding work provider” and are considered part of the abstract idea.) Accordingly, the additional elements are not significantly more, when viewed alone or in combination.
Therefore, per Step 2B, the claims are not patent eligible.
Further, the analysis takes into consideration all dependent claims as well:
Claim 41 is directed to narrowing the abstract with additional steps (monitoring… disclosing) and therefore would still fall into the same groupings above. This does not integrate the abstract idea into a practical application and is not significantly more.
Claim 42 is directed to narrowing the abstract with additional information (the project creator using one of the crowdfunding work providers whose success is disclosed to them) and therefore would still fall into the same groupings above. This does not integrate the abstract idea into a practical application and is not significantly more.
Claim 62 is directed to narrowing the abstract with additional steps (monitoring… disclosing) and therefore would still fall into the same groupings above. This does not integrate the abstract idea into a practical application and is not significantly more.
Claim 63 is directed to narrowing the abstract with additional information (the project creator using one of the prototyping work providers whose success rate is disclosed to them, to carry out prototyping work for the project) and therefore would still fall into the same groupings above. This does not integrate the abstract idea into a practical application and is not significantly more.
Claim 64 is directed to narrowing the abstract with additional steps (storing… displaying) and therefore would still fall into the same groupings above. The further additional element (“electronically”) is equivalent to applying generic computing elements to the abstract idea, per MPEP 2106.05(f). This does not integrate the abstract idea into a practical application and is not significantly more, when this element is viewed alone or in combination with those highlighted previously.
Claim 65 is directed to narrowing the abstract with additional steps (monitoring… disclosing) and therefore would still fall into the same groupings above. This does not integrate the abstract idea into a practical application and is not significantly more.
Claim 66 is directed to narrowing the abstract with additional information (the project creator using one of the prototyping work providers whose success rate is disclosed to them, to carry out prototyping work for the project) and therefore would still fall into the same groupings above. This does not integrate the abstract idea into a practical application and is not significantly more.
Claim 68 is directed to narrowing the abstract with additional steps (the prototyping work provider being stored…) and therefore would still fall into the same groupings above. The further additional element (“database”) is equivalent to applying generic computing elements to the abstract idea, per MPEP 2106.05(f). This does not integrate the abstract idea into a practical application and is not significantly more, when viewed alone or in combination with those additional elements highlighted previously.
Accordingly, claims 1, 41-42, and 61-68 are rejected under 35 USC § 101 as being directed to non-statutory subject matter.
Response to Arguments
Applicant’s response filed 9/15/25 has been considered in its entirety.
Claim Rejections - 35 USC § 101
Applicant offers comments regarding the rejections under 35 USC § 101 interspersed throughout the response. Applicant’s main argument, that the Mental Process grouping does not apply, is reflected in the following remarks:
I re-affirm all previous points we have made in previous responses, (especially with regard to 'Mental Processes- Concepts Performed In the Human Mind', (with reference to monitoring success rates)), for example). I would be interested to hear whether, (from the examiner's point of view, (and from a technical patenting point of view)), any of these considerations are affected by what is now filed. […]
(With regard to my statement that "I am not sure, for example, that it was appropriate for an objection of 'performance of the limitations in the mind' to be brought against "monitoring a success rate of the work provider'" (mentioned by the examiner regarding claims 1, 48, and 54", I am not sure what the implications are of the term 'evaluation', (mentioned in the report). What has been provided has practical application in its industry, for example. (Thus it could be argued to be more than just a mental exercise, for example). (I had previously stated that my instinct is that there should not be a problem with claiming such a thing. […]
Thus lack of response to any 'ineligibility' objection/rejection (of any sort) made by the examiner should in no way be assumed to be tacit agreement, (and should not be used, for example, as any basis for estoppel)).
Examiner first notes that industrial applicability is not equivalent to patent eligibility, which is informed by MPEP 2106. Examiner also recognizes that applicant may present additional arguments and/or amendments at a later date.
Regarding the Mental Process grouping and remarks directed thereto, examiner is informed by MPEP § 2106.04(a)(2), subsection III, which states:
The courts consider a mental process (thinking) that “can be performed in the human mind, or by a human using a pen and paper” to be an abstract idea. CyberSource Corp. v. Retail Decisions, Inc., 654 F.3d 1366, 1372, 99 USPQ2d 1690, 1695 (Fed. Cir. 2011). As the Federal Circuit explained, “methods which can be performed mentally, or which are the equivalent of human mental work, are unpatentable abstract ideas the ‘basic tools of scientific and technological work’ that are open to all.’” 654 F.3d at 1371, 99 USPQ2d at 1694 (citing Gottschalk v. Benson, 409 U.S. 63, 175 USPQ 673 (1972)). See also Mayo Collaborative Servs. v. Prometheus Labs. Inc., 566 U.S. 66, 71, 101 USPQ2d 1961, 1965 (2012) (“‘[M]ental processes[] and abstract intellectual concepts are not patentable, as they are the basic tools of scientific and technological work’” (quoting Benson, 409 U.S. at 67, 175 USPQ at 675)); Parker v. Flook, 437 U.S. 584, 589, 198 USPQ 193, 197 (1978) (same).
Accordingly, the “mental processes” abstract idea grouping is defined as concepts performed in the human mind, and examples of mental processes include observations, evaluations, judgments, and opinions. A discussion of concepts performed in the human mind, as well as concepts that cannot practically be performed in the human mind and thus are not “mental processes”, is provided below with respect to point A.
The courts do not distinguish between mental processes that are performed entirely in the human mind and mental processes that require a human to use a physical aid (e.g., pen and paper or a slide rule) to perform the claim limitation. See, e.g., Benson, 409 U.S. at 67, 65, 175 USPQ at 674-75, 674 (noting that the claimed “conversion of [binary-coded decimal] numerals to pure binary numerals can be done mentally,” i.e., “as a person would do it by head and hand.”); Synopsys, Inc. v. Mentor Graphics Corp., 839 F.3d 1138, 1139, 120 USPQ2d 1473, 1474 (Fed. Cir. 2016) (holding that claims to a mental process of “translating a functional description of a logic circuit into a hardware component description of the logic circuit” are directed to an abstract idea, because the claims “read on an individual performing the claimed steps mentally or with pencil and paper”). Mental processes performed by humans with the assistance of physical aids such as pens or paper are explained further below with respect to point B.
Nor do the courts distinguish between claims that recite mental processes performed by humans and claims that recite mental processes performed on a computer. As the Federal Circuit has explained, “[c]ourts have examined claims that required the use of a computer and still found that the underlying, patent-ineligible invention could be performed via pen and paper or in a person’s mind.” Versata Dev. Group v. SAP Am., Inc., 793 F.3d 1306, 1335, 115 USPQ2d 1681, 1702 (Fed. Cir. 2015). See also Intellectual Ventures I LLC v. Symantec Corp., 838 F.3d 1307, 1318, 120 USPQ2d 1353, 1360 (Fed. Cir. 2016) (‘‘[W]ith the exception of generic computer-implemented steps, there is nothing in the claims themselves that foreclose them from being performed by a human, mentally or with pen and paper.’’); Mortgage Grader, Inc. v. First Choice Loan Servs. Inc., 811 F.3d 1314, 1324, 117 USPQ2d 1693, 1699 (Fed. Cir. 2016) (holding that computer-implemented method for "anonymous loan shopping" was an abstract idea because it could be "performed by humans without a computer"). Mental processes recited in claims that require computers are explained further below with respect to point C.
Based on the cited portion of the MPEP, examiner remains unpersuaded that the Mental Process grouping does not apply. It’s examiner’s position that an individual, e.g., an administrator, could “monitor” the various success rates associated with various providers. The particular limitation, i.e., “monitoring the success rate the crowdfunding work provider has of successfully getting projects crowdfunded by reaching the target funding amount,” is recited broadly and is something easily accomplished with pen and paper. While applicant does claim various computing elements, these are recited at a high level of generality and simply being used to facilitate the tasks of the abstract idea. Based on MPEP 2106.05(f), this does not integrate the abstract idea into practical application and is not significantly more.
Lastly, examiner reiterates that there are multiple Abstract Idea groupings, as seen in the rejection above. Even if applicant is persuasive regarding the Mental Process grouping not being applicable, the abstract idea could still be considered as relating to Certain Methods of Organizing Human Activity.
In summary, examiner has responded to all arguments regarding the rejections under 35 USC § 101 and found them unpersuasive.
Conclusion
While inventors named as applicants in a patent application may prosecute the application pro se, lack of familiarity with patent examination practice and procedure may result in missed opportunities in obtaining optimal protection for the invention disclosed. The inventor(s) may wish to secure the services of a registered patent practitioner to prosecute the application, because the value of a patent is largely dependent upon skilled preparation and prosecution. The Office cannot aid in selecting a patent practitioner.
A listing of registered patent practitioners is available at https://oedci.uspto.gov/OEDCI/. Applicants may also obtain a list of registered patent practitioners located in their area by writing to Mail Stop OED, Director of the U.S. Patent and Trademark Office, P.O. Box 1450, Alexandria, VA 22313-1450.
The prior art made of record and not relied upon is considered pertinent to applicant's disclosure:
US 20070260469, which teaches: A method of finding and commercializing extraordinary ideas of ordinary people includes: receiving, by a first party, from each of a plurality of persons, a disclosure of an idea of the person and, for each person from whom a disclosure of an idea is received, identifying a good or service (collectively "Product") embodying the disclosed idea, considering patentability of the Product, and considering commercial feasibility of the Product. The first party then selects a plurality of ideas based and acquires intellectual property rights in those ideas. The selected ideas are then brought to market. The process is video recorded and a broadcast program including the video recording is produced. All rights in the selected ideas are acquired in exchange for consideration that is predetermined prior to their disclosure.
US 8554636, which teaches: A method and system for facilitating the transfer of intellectual property are disclosed. In one embodiment, the method of facilitating the transfer of intellectual property includes obtaining at a computer system of a first entity information concerning intellectual property in which an interest is available for transfer (the "available intellectual property") from a second entity. The method further includes transferring the interest in the available intellectual property by concluding an agreement between the first and second entities. The agreement is representative of an acceptance of an offer concerning the transferring of the interest in the available intellectual property and consideration for the transferring of the interest. At least a portion of the interest in the available intellectual property that is transferred to the first entity is intended to be transferred from the first entity to a third entity.
US 20170109847, which teaches: A system and method are disclosed for categorizing intellectual property and providing a solicitation to a plurality of registered members for sponsorship in the intellectual property. In response to a reply to the solicitation, materials associated with the intellectual property are provided and in response to the solicitation and/or the provided materials, a first acceptance to the sponsorship is received. Further, in response to the solicitation and/or the provided materials, a second acceptance to the sponsorship. At least one license to at least some of the classified intellectual property is provided to at least one of the registered members at a maximum threshold value.
THIS ACTION IS MADE FINAL. Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to JOHN SAMUEL WASAFF whose telephone number is (571)270-5091. The examiner can normally be reached Monday through Friday 8:00 am to 6:00 pm.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, SARAH MONFELDT can be reached at (571) 270-1833. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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JOHN SAMUEL WASAFF
Primary Examiner
Art Unit 3629
/JOHN S. WASAFF/Primary Examiner, Art Unit 3629